TMEP 713.03: Response to Applicant’s Arguments in Nonfinal Actions

This is the October 2015 Edition of the TMEP

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713.03    Response to Applicant’s Arguments in Nonfinal Actions

When the applicant submits arguments attempting to overcome a refusal or requirement, the examining attorney must respond to the applicant’s arguments. See TMEP §718.02(a) for an examining attorney’s response to an applicant’s incomplete response to a partial nonfinal refusal or requirement and TMEP §§715.03 and 715.04 for an examining attorney’s response to an applicant’s arguments in a request for reconsideration after final action.

In response to a refusal under §2(d) of the Trademark Act, 15 U.S.C. §1052(d), the applicant may respond that the cited registration should be cancelled because the registrant has not filed the required maintenance documents.

The examining attorney must not withdraw a refusal of registration under §2(d) until the Trademark database shows that the registration is cancelled or expired. To allow ample time for processing of timely filed post-registration maintenance documents, the USPTO waits until 30 days after the expiration of the grace period before updating its records to show that the registration is cancelled or expired.

If the examining attorney determines that 30 days have passed since the expiration of the grace period, but the Trademark database does not indicate that the registration is cancelled or expired, the examining attorney should contact the Supervisor of the Post Registration Section and request that the database be updated to show that the registration is cancelled or expired. See TMEP §1611. If a party other than the examining attorney determines that 30 days have passed since the expiration of the grace period, but the Trademark database does not indicate that the registration is cancelled or expired, the party should contact the Trademark Assistance Center at (571) 272-9250 or (800) 786-9199 and request that the database be updated to show that the registration is cancelled or expired.

See TMEP §716.02(e) regarding when suspension is proper for awaiting cancellation/expiration of a cited registration for failure to file required maintenance documents.